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Q: Is it necessary to hire a patent attorney to file a
patent application?Renee Burton

Although the United States Patent and Trademark Office (USPTO)
does not require a patent attorney to file a patent, there are
many reasons it is in your best interest to hire one. Most
entrepreneurs have a limited budget, but the startup’s
intellectual property is critical to its success and cutting too
many corners early on can have a lasting impact on the
business. Still, good attorneys recognize that startups
have budget challenges and keeping that in focus is similarly
critical.

A patent application -- whether a provisional or non-provisional
-- can be written and submitted by a non-attorney. Ignoring
the complexity of filing the application properly at the USPTO,
the primary concern is whether an inexperienced inventor can
write an application which satisfies the myriad of rules,
statutes and case law which are part of patent law. It is
not a user-friendly area of law and, unfortunately, not conducive
for DIYers.

A provisional application is a placeholder with the USPTO.
It is not reviewed by an examiner but may help secure some
benefits under patent law. There is no required structure
to the provisional application -- including no requirement for
claims (the clauses in a patent that define the scope of the
protection being sought). A non-provisional application,
which must be filed within one year of the provisional to which
it applies, is reviewed by an examiner and could lead to an
issued patent.

If an inventor is not going to work with an attorney, a
provisional is a far more common approach. However, some of
the dangers for the individual working without an attorney
include:

Not providing enough disclosure of the invention to permit
use of the provisional’s filing date to the benefit of the
non-provisional.

Failure to monitor the one-year anniversary by which a
non-provisional must be filed or not providing a patent attorney
or patent agent enough time to properly draft a non-provisional
application before the deadline.

Relying on the provisional filing to protect your rights
while publicly disclosing additional inventions or improvements
after the filing.

Seeking funds from angels, VCs and other sources but
revealing a weak (or possibly useless) provisional during due
diligence.

Disclosing too much, including multiple inventions not
particularly related to the primary invention or information not
relevant to the provisional application.

Making inaccurate statements such as incorrectly
characterizing prior inventions of others.

There are possible opportunities to work with a patent attorney
on a limited budget, including some attorneys who offer startup
packages. Shopping for that right fit, while not fun,
certainly is important for the budget and the long-term
relationship needed for the patent process.

Creating a “white paper” describing the invention in substantial
detail is another way to keep expenses down. Be sure to
include pictures, drawings, charts and other information that can
serve as a guide for the attorney preparing the application.
There is no magic number of pages or drawings, but it becomes a
great tool for the inventor to capture all of the ideas in one
place and a useful guide for the attorney preparing a
budget-driven application. Provisional applications often
come out of a white paper with some minor tweaks.

Since most attorneys charge on an hourly basis, limit the number
of new ideas thrown at the attorney while the application
drafting process is ongoing. Certainly, all relevant
information should be provided, but disorganized meetings and/or
partially written white papers can result in lost time, rewriting
by the attorney and more questions. All of this can lead to
a higher than expected cost and disagreement about what the
initial budget covered. Staying focused and avoiding
piecemeal disclosures are important.

While it is possible to file a provisional application without
hiring an attorney, it is important to weigh all the benefits and
risks associated with doing so. While you may lack funds now,
properly protecting your IP will help you make money down the
road.